In Fox Factory, Inc. v. SRAM, LLC, the Patent Trial and Appeal Board (PTAB) exercised its discretion to deny institution of a petition for inter partes review (IPR). IPR2017-01439, Paper 7 (PTAB Dec. 8, 2017). Under 35 U.S.C. § 325(d), the PTAB has the discretion to deny institution if “the same or substantially the same prior art or arguments previously were presented to the Office.” In Fox Factory, the panel determined that the ground of challenge presented in the IPR petition was “nearly identical” to a ground currently under consideration in a parallel reexamination. The fact that the reexamination was still pending and that no final determination had been rendered did not deter the PTAB from denying institution.

Although the ground presented in the IPR relied on a new primary reference that was not under consideration in the parallel reexamination, the PTAB panel determined that the new reference does not “meaningfully alter[] the substance of the ground of unpatentability.” Id. at 8, n. 2. The panel also noted that reexamination was ordered and had been ongoing for almost a year. The panel found that one of the references cited in the IPR challenge was previously considered in an earlier, separate reexamination proceeding which had concluded.